Q) Smith over Jones, Appeal (10.03.45p)

by patentbar on December 6, 2007 · 6 comments

in Exam Questions

Smith over Jones tests appeals MPEP 1200 and is reportable in the Prometric database. It is a repeat question (10.03.45p).

45. A patent application has claims 1-10 pending. Claims 1 and 7 are independent claims. Claims 2-6 depend directly from claim 1 while claims 8-10 depend directly from claim 7. Claims 1-10 have been twice rejected by the primary examiner under 35 USC 103(a) as being unpatentable over Smith patent in view of Jones patent. The applicant has appealed the rejection to the Board of Patent Appeals and Interferences. In the brief under the “grouping of claims” section, appellant states that each of the claims is separately patentable. In the arguments section of the brief, appellant separately argues only claims 1, 4 and 6. In the examiner’s answer, the examiner disagrees with appellant’s claim grouping because all the claims present a similar issue of patentability. The examiner states that the claims all stand or fall together as a single group. In accordance with the patent laws, rules and procedures as related in the MPEP, which claim(s) must the Board consider separately on the merits?

(A) The Board must consider each of claims 1-10 separately on the merits.

(B) The Board must only consider claims 1, 4 and 6 separately on the merits.

(C) The Board must only consider claim 1 separately on the merits.

(D) The Board must consider claim 1 and claim 7 separately on the merits as representative of all the claims on appeal.

(E) The Board must determine which claim is representative of all the claims on appeal and consider only that claim separately on the merits.

45. ANSWER: (B) is the most correct answer. 37 CFR § 1.192(c)(7); MPEP § 1206, under the heading “Appeal Brief Content,” subheading “(7) Grouping of Claims.” 37 CFR §1.192(c)(7) requires that an appellant perform two affirmative acts in the brief to receive separate consideration of the patentability of a plurality of claims that are subject to the same rejection. The appellant must (1) state that the claims do not stand or fall together and (2) present arguments why the claims subject to the same rejection are separately patentable. Since the appellant here has only performed the two affirmative acts with respect to claims 1, 4 and 6, these are the claims that the Board must consider separately for patentability. The examiner has no input on the grouping of claims. (D) is incorrect inasmuch as § 1.192(c)(7) requires the inclusion of reasons in order to avoid unsupported assertions of separate patentability. See MPEP § 1206, subheading subheading “(7) Grouping of Claims.” Where the grouping of claims section is inconsistent with the arguments section as in the facts of this case, the examiner should have notified the appellant that the brief was in noncompliance as per 37 CFR § 1.192(d). See Ex parte Schier, 21 USPQ2d 1016 (Bd. Pat. App. & Int. 1991); Ex parte Ohsumi, 21 USPQ2d 1020 (Bd. Pat. App. & Int. 1991). However, failure of the examiner to note noncompliance does not require the Board to separately consider claims which have not been specifically argued in the brief. (A) is incorrect inasmuch as the two affirmative acts required by § 1.192(c)(7) to have the separate patentability of a plurality of claims subject to the same rejection considered, i.e., (1) state that the claims do not stand or fall together and (2) present arguments why the claims subject to the same rejection are separately patentable, have not been presented for each of claims 1-10. (C) is are incorrect because the provisions of § 1.192(c)(7) have been satisfied for claims 1, 4 and 6. (E) is wrong because the provisions of § 1.192(c)(7) have been satisfied. (A), (C) and (D) are incorrect answers.

{ 6 comments… read them below or add one }

1 cindyNo Gravatar June 25, 2009 at 9:28 am

37 CFR § 1.192(c)(7) is no longer exist in MPEP.
Has anyone seen repeat of this question on the exam?
Thanks.

Reply

2 CWNo Gravatar June 25, 2009 at 2:24 pm

Take a look at 1200-15 MPEP 1205.02. You will see the “grouping” question. you can also look at 37 CFR 41.37 (c) (1)(7). I think that section replaced 1.192(c)(7) but you could read the blue pages to confirm.

Reply

3 misspatentNo Gravatar April 2, 2011 at 2:23 pm

The discussion in the MPEP is now in the “Argument” section of 1205.02: “Each ground of rejection must be treated under a separate heading. For each ground of rejection applying to two or more claims, the claims may be argued
separately or as a group. When multiple claims sub-ject to the same ground of rejection are argued as a group by appellant, the Board may select a single
claim from the group of claims that are argued together to decide the appeal with respect to the group of claims as to the ground of rejection on the basis of
the selected claim alone. The failure of appellant to separately argue claims which appellant has grouped together constitutes a waiver of any argument that the Board must consider the patentability of any grouped claim separately. See In re McDaniel, 293 F.3d 1379, 1384, 63 USPQ2d 1462, 1465-66 (Fed. Cir. 2002). Any claim argued separately should be placed under a subheading identifying the claim by number. Claims argued as a group should be placed under a subhead- ing identifying the claims by number.”

Reply

4 GDBNo Gravatar April 12, 2012 at 8:22 pm

I’m still not clear on this. Doesn’t the quote below from MPEP 1205.02 mean that the Board can select a single claim from a group of claims which are subject to the same ground of rejection in order to decide the appeal? In that case, wouldn’t answer (E) be correct?

“When multiple claims sub-ject to the same ground of rejection are argued as a group by appellant, the Board may select a single
claim from the group of claims that are argued together to decide the appeal with respect to the group of claims as to the ground of rejection on the basis of
the selected claim alone.

Reply

5 PotentialNo Gravatar May 19, 2012 at 9:33 pm

GDB, I was tricked on the same question as well, but I re-read the question, realized, Choice C says the Board MUST only consider Claim 1, so it is wrong on the MUST.
what the board MUST do is “must consider the patentability of any grouped claim separately” if appellant listed the subheadings separately , although the board MAY only chose one from the group to argue.
Make sense?

Reply

6 speedplaneNo Gravatar May 16, 2013 at 7:40 am

The examiner’s position on the grouping of claims is irrelevant to what the board must do, right?

Reply

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